DETAILED ACTION
This is a first action reissue examination of U.S. Patent No. 11,103,759 B2 (hereafter “the’759 patent” and equivalent) addressing the filing 30 August 2023.
The following is the status of the claim under current review:
Claims 1-38 are pending. Of those:
Claims 1-20 are as patented, and
Claims 21-38 are new.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,103,759 B2, which issued from App. No. 16/709672 (hereafter “the ‘672 application” and equivalent) having a filing date of 10 December 2019. Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘672 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the record indicates no maintenance fees are due at this time. The 7.5-year fee window opens 31 August 2028. The window for the fee with surcharge opens 01 March 2029, and the last day to pay the fee with surcharge is 31 August 2029.
Information Disclosure Statement
The Information Disclosure Statement dated 16 January 2025, is entered.
Consent of Assignee
The Consent of Assignee is entered
Specification
The amendment to the specification is entered.
Claim Objections
Claims 1, 2, 8, 14, 20, 21, 27 and 33 are objected to because of the following informalities: see below. Appropriate correction is required.
Claim 1, 8, 14, 20, 27, 33: each of the independent claims states “each actuator” (e.g., claim 1, line 3) and “guide structure” (line 4). These limitations lack antecedent basis.
Claims 2 and 21: “each actuator” (e.g., claim 2, line 1) lacks antecedent basis.
35 USC §251
35 USC §251 – New Matter:
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
Independent Claims 20, 27 and 33, and thereby dependent claims 21-26, 28-32 and 34-38 are rejected under 35 USC 251 as containing new matter.
The respective independent claims state “associated with” with respect to the relationship between the actuators and framework (see line 3 of each respective independent claim). Upon review, neither this language, nor its equivalents or derivations, appeared in the patented disclosure. Further, one having ordinary skill in the art cannot conclusively determine applicant had possession of this language at the time the invention was made. “[A]ssociated with” is broader than “coupled to” as “associated with” does not require any type of connection or equivalent limitation as “coupled to”.
Further, the respective independent claims provide ”positioned” with respect to the relationship between the shaft and upper support (see line 4 of each respective independent claim). This term is broader than “extending” as “extending” provides a different and more narrow relationship between the shaft and upper support. Upon review, neither this language, nor its equivalents or derivations, appeared in the patented disclosure. Further, one having ordinary skill in the art cannot conclusively determine applicant had possession of this language at the time the invention was made. While noting the language “positioned to extend” is in patented claim 8, the language is narrow enough such that it requires extension with respect to the shaft from the upper support.
As a result, the respective language is considered new matter.
Claims 21-26, 28-32 and 34-38 are rejected via their dependency from their respective independent claims
Applicant is also respectfully reminded of the possible effect amending the claims has with respect to the error statement made on the Reissue Oath Form AIA -05
Claim Rejections - 35 USC § 112
35 USC 112(a) – New Matter:
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Independent Claims 20, 27 and 33, and thereby dependent claims 21-26, 28-32 and 34-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent Claims 20, 27 and 33, and thereby dependent claims 21-26, 28-32 and 34-38 are rejected under this heading for the reasons set forth above under the 35 USC 251 heading, which will not be repeated here for brevity.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim rejections: 35 USC 102(a) citing Non-Patent Literature to Ralphs “Re-Configurable Putting Greene”:
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claim(s) 1-38 is/are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Non-Patent Literature to Ralphs, Matthew (“Re-Configurable Putting Green”, Utah State University; available 03 May 2012, hereafter “Ralphs” and equivalent). Below is a substantial reproduction of the presented claims with the examiner’s comments in bold italics.
Claims 1, 8, 14, 20, 27 and 33: Ralphs discloses A system for a person to practice putting (39) , the system comprising:
a framework (see annotated figure from Ralphs below);
a plurality of actuators (as shown on p. 21) coupled to the framework in an array (as shown), each actuator including guide structure (see annotated figure from p. 41 of Ralphs, below), a motor (see below) and a threaded shaft (see below), the threaded shaft extending (or “positioned” per claims 20, 27 and 33) below an upper support (see below), the upper support coupled to the threaded shaft (as shown), the motor configured to rotate the threaded shaft to vertically move the upper support relative to the framework (as per its purpose and as shown), the upper support having an upward facing surface (abutting the green as shown), the guide structure configured to guide rotational movement of the threaded shaft to move the upper support to various predetermined heights (as per its purpose; see p. 10, first two full paragraphs), wherein the upper support of each of the plurality of actuators is vertically moveable by a single actuator independent of any other one actuator of the plurality of actuators (as shown and would be the purpose per the disclosure, this would be a necessary feature in order for the contour of the putting surface to vary);
an artificial green including a putting surface (see p. 51, part D-017) with a cup (p. 51: as labeled) defined in the putting surface, the artificial green positioned over the actuators (as shown; see, e.g., p 21), the upward facing surface of the upper support directly contacting an underside of the artificial green below the putting surface (as shown on p. 21);
a control system (p. 16, sub 5.1.1) coupled to and configured to control actuation of the actuators (as disclosed in the respective section); and
a computing device (p. 18, sub 5.1.2) coupled to the control system and configured to communicate with the control system, the computing device including user input controls and coupled to a display (as disclosed).
Per Claims 8 and 27, Ralphs discloses the threaded shaft is a shaft (by definition), the shaft positioned to extend below an upper support such that, upon the motor actuating rotational movement of the shaft (as disclosed).
Per Claims 14 and 33, Ralphs discloses the motor configured to rotatably move the threaded shaft to linearly move the upper support in an upward or downward direction to various predetermined heights (as disclosed and shown generally),
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Annotated Figure from p. 39 from Ralphs
[AltContent: textbox (threaded sleeve)][AltContent: arrow][AltContent: arrow][AltContent: textbox (upper support)][AltContent: textbox (threaded shaft)][AltContent: arrow][AltContent: textbox (motor)][AltContent: arrow][AltContent: textbox (framework)][AltContent: arrow]
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Annotated Figure from p. 41 from Ralphs
Claims 2 and 21: Ralphs discloses The system as claimed, wherein the threaded shaft of each actuator is rotatably coupled to a threaded sleeve (see annotated figure from p. 41 above), the threaded shaft moveable relative to the threaded sleeve between a first end position and a second end position as the motor rotates the threaded shaft (as per its purpose).
Claims 3, 9, 15, 22, 28, 34: Ralphs provides The system as claimed, wherein the threaded shaft (or shaft per claims 28) is directly coupled to the upper support (as shown generally from the figure form p. 41)
Claims 4, 10, 16, 23, 29 and 35: Ralphs provides The system as claimed, wherein the artificial green comprises multiple layers each extending over the plurality of actuators (see pages 21 and 51).
Claims 5, 11, 17, 24, 30 and 36: Ralphs discloses The system as claimed, wherein each of the plurality of actuators are configured to actuate to the various predetermined heights between a first end position and a second end position to provide a contoured putting surface that corresponds with a putting green profile selected at the display with the user input controls (see p. 6, sub 4.2).
Claims 6, 12, 18, 25, 31 and 37: Ralphs discloses The system as claimed, wherein the computing device is configured to translate mapped information from the putting green profile and communicate the mapped information to the control system to control actuation of the actuators (beginning p. 16, heading 5: “Software” discloses this feature).
Claims 7, 13, 19, 26, 32 and 38: Ralphs discloses The system as claimed, wherein the computing device is configured to provide a user interface viewable on the display for a user to input selections particular to a putting green profile and the control system is configured to control actuation of the actuators to modify the putting surface to correspond with the putting green profile selected by the user (beginning at p. 16, sub 5.1.1).
Claim rejections: 35 USC 102(b) citing Chen (U.S. Patent 6,913,541 B2):
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
1, 2, 5-8, 11-14, 17-21, 24-27, 30-33 and 36-38 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Chen (U.S. Patent 6,913,541 B2). Below is a substantial reproduction of the presented claims with the examiner’s comments in bold italics.
Claims 1, 8, 14, 20, 27 and 33: Chen discloses A system for a person to practice putting (Title; Abstract; disclosure in general) , the system comprising:
a framework (Fig. 3: 11);
a plurality of actuators (20; see Fig. 1 which shows a plurality) coupled to (or “associated with” per claims 20, 27 and 33) the framework in an array (see where the array is a 1x2), each actuator including guide structure (Fig. 2: 21), a motor (22) and a threaded shaft (Fig. 5: 241), the threaded shaft extending (or “positioned” per claims 20, 27 and 33) below an upper support (33), the upper support coupled to the threaded shaft (as shown), the motor configured to rotate the threaded shaft to vertically move the upper support relative to the framework (as per its purpose), the upper support having an upward facing surface (abutting 30 as shown in Fig. 6), the guide structure configured to guide rotational movement of the threaded shaft to move the upper support to various predetermined heights (as per its purpose; see Col. 3, lines 30-40, which notes the predetermined configurations), wherein the upper support of each of the plurality of actuators is vertically moveable by a single actuator independent of any other one actuator of the plurality of actuators (as shown and would be the purpose per the disclosure, this would be a necessary feature in order for the contour of the putting surface to vary);
an artificial green including a putting surface (30) with a cup (aperture 31 and 16 combined) defined in the putting surface, the artificial green positioned over the actuators (as shown), the upward facing surface of the upper support directly contacting an underside of the artificial green below the putting surface (as shown in Fig. 5);
a control system (60) coupled to and configured to control actuation of the actuators (as disclosed; see Col. 4, lines 16-30); and
a computing device (microprocessors as disclosed and interface unit) coupled to the control system and configured to communicate with the control system, the computing device including user input controls and coupled to a display (53).
Per Claims 8 and 27, Chen discloses the threaded shaft is a shaft (by definition), the shaft positioned to extend below an upper support such that, upon the motor actuating rotational movement of the shaft (as disclosed).
Per Claims 14 and 33, Chen discloses the motor configured to rotatably move the threaded shaft to linearly move the upper support in an upward or downward direction to various predetermined heights (as disclosed and shown generally),
Claims 2 and 21: Chen discloses The system as claimed, wherein the threaded shaft of each actuator is rotatably coupled to a threaded sleeve (25), the threaded shaft moveable relative to the threaded sleeve between a first end position and a second end position as the motor rotates the threaded shaft (compare Figs. 5 and 6).
Claims 5, 11, 17, 24, 30 and 36: Chen discloses The system as claimed, wherein each of the plurality of actuators are configured to actuate to the various predetermined heights between a first end position and a second end position to provide a contoured putting surface that corresponds with a putting green profile selected at the display with the user input controls (as per its purpose; see Col. 3, lines 30-40, which notes the predetermined configurations).
Claims 6, 12, 18, 25, 31 and 37: Chen discloses The system as claimed, wherein the computing device is configured to translate mapped information from the putting green profile and communicate the mapped information to the control system to control actuation of the actuators (as per its purpose; see Col. 3, lines 30-40).
Claims 7, 13, 19, 26, 32 and 38: Chen discloses The system as claimed, wherein the computing device is configured to provide a user interface viewable on the display for a user to input selections particular to a putting green profile and the control system is configured to control actuation of the actuators to modify the putting surface to correspond with the putting green profile selected by the user (as per its purpose; see Col. 3, lines 30-40, which notes the ability to configure; see also Col. 6, lines 15-20).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 3, 4, 9, 10, 15, 16, 22, 23, 28, 29, 34 and 35 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Chen in view of Jackson U.S. Patent 1,612,291).
Claims 3, 9, 15, 22, 28, 34: Chen provides The system as claimed, except wherein the threaded shaft (or shaft per claims 28 is directly coupled to the upper support. Jackson teaches a similar adjustment system that has a threaded shaft and sleeve (3 and 4 respectively) configured such that the upper support (6) is coupled directly to the threaded shaft (as shown in Fig. 3). It would have been obvious at the time of invention to a person having ordinary skill in the art to arrange the parts as necessary because rearrangement of parts is considered an obvious matter of design choice. (See In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)(the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice.) To have the shaft directly coupled to the upper support as opposed to the sleeve would not depart from the scope of operability of the invention in Chen and would function in an equal manner. This is a mere rearrangement of parts and not a patentable advance.
Claims 4, 10, 16, 23, 29 and 35: Chen provides The system as claimed, except wherein the artificial green comprises multiple layers each extending over the plurality of actuators. Jackson teaches a similar system that has layers (3, 10 as shown). It would have been obvious at the time of filing to a person having ordinary skill in the art to have multiple layers in order to more accurately simulate the natural feel of a putting green as opposed to a single layer. A more natural-feeling green would provide a more realistic training device which would facilitate ease of transitioning to actual play.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,103,759 B2 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
CONFEREES:
/PETER C ENGLISH/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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